Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 21/02/2017

COHAUSZ & FLORACK Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB

Bleichstr. 14

D-40211 Düsseldorf

ALEMANIA

Application No:	015777113
Your reference:	161746EU
Trade mark:	STEADY RECORD 2.0
Mark type:	Word mark
Applicant:	LG ELECTRONICS INC. 128, Yeoui-daero, Yeongdeungpo-gu Seoul 150-721 REPÚBLICA DE COREA (LA)

The Office raised an objection on 15/09/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 21/11/2016, which may be summarised as follows:

1. The expression “STEADY RECORD 2.0” does not have a clearly delineated meaning, at least with respect to the goods covered by the application. The message conveyed by the mark applied for is non-specific. Even when the particular goods are known, the expression is vague, merely allusive and can be used in a number of different contexts. The expression “STEADY RECORD 2.0” does not give useful information to the consumers.

2. The expression “STEADY RECORD 2.0” is not commonly used in the relevant market of sale and distribution of electronic devices. It could not even be said that the expression “STEADY RECORD 2.0” as a whole is suggestive in relation to any understandable subject matter. This is even more an argument that the mark is eligible for registration.

3. A professional public and the consumers when buying consumer electronics will spend a great deal of time and forethought considering the merits of one producer’s product compared to another before one is finally chosen. Any decision to take up the goods offered by the applicant under the proposed mark will be made only after thorough analysis of the experience and the capabilities of the applicant and after comparison with similar goods of other undertakings.

4. The mark “STEADY RECORD 2.0” will be found on the applicant’s product packaging, etc. and will become associated in the mind of the consumer with the goods in question. The relevant consumers will know that the expression “STEADY RECORD 2.0” is not an expression used for the goods applied for.

Pursuant to Article 75 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

Despite the notification of the Office on 15/09/2016 identifying the descriptive meaning of ‘STEADY RECORD 2.0’, the applicant argues that the message conveyed by the mark applied for is non-specific, vague, or merely allusive. The applicant also argues that the term can be used in a number of different contexts, but yet does not provide the Office with any.

When the relevant consumer is confronted with the applied for mark ‘STEADY RECORD 2.0’ in combination with the goods, Smartphones; Software for voice recording; Software for smartphones; Devices for the recording, transmission and reproduction of sounds and images; Computer software; Wearable computers, given that all of the devices have the possibility to have recording functionalities, and given that some software is specifically developed for recording functionalities, they will not see the applied for mark as an indication of trade origin, but rather as a description of an advanced or improved functionality which allows for the recording of media (audio or audio-visual) in a way which prevents fluctuations in the quality of the recording.

Furthermore, it is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

For a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added). This is the present case.

Therefore, taken as a whole, the words ‘STEADY RECORD 2.0’ immediately informs consumers without further reflection that the goods applied for are a superior or advanced version of a device or software which allows for recording steadily or free from fluctuation. For this reason, the Office is of the opinion that the mark conveys obvious and direct information regarding the kind, quality, and intended purpose of the goods in question. It follows that the link between the words ‘STEADY RECORD 2.0’ and the goods referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.

Moreover, it is settled case-law that a mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) CTMR (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 19 and 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 86).

The applicant argues that the applied for mark will become distinctive with its use on the packaging of the goods. This could be the case in the future, albeit very doubtful given the descriptiveness of the mark, but in the present this does not overcome the prohibitions laid down in Article 7(1)(b) and (c) of the EUTMR.

Given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

Consequently, taken as a whole, the mark applied for – ‘STEADY RECORD 2.0’ – is devoid of any distinctive character and is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) EUTMR and Article 7(2) EUTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 015777113 is hereby rejected for the following goods:

Class 9 Smartphones; Software for voice recording; Software for smartphones; Devices for the recording, transmission and reproduction of sounds and images; Computer software; Wearable computers.

The application may proceed for the remaining goods.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

Herbert JOHNSTON